One of the discussion points concerned the impact of the recent US Supreme Court decision in KSR v Teleflex on the US patent system. The panel in my view wisely concluded that time (and I would suggest a few well-litigated cases) will tell the extent to which the case has dramatically changed US practice.

The KSR opinion is quite detailed and full of statements which will no doubt become the basis of many future cases. One of these is of particular interest – the comment about routine innovations being obvious. To my mind, this speaks to the very same issue being litigated by Novartis over Gleevec in India (in relation to section 3(d) of the Indian Patent Act). And this is the argument many people use to support 3(d) – that it is merely an obviousness standard. In other words, mere innovations are not capable of patent protection. (Except in Australia, which has Innovation Patents designed specifically to have an extremely low threshold of ‘inventiveness’ – much easier to meet than obviousness.)

The question is, should such things be codified, or should they be left to the courts to decide? If they are to be codified, should they be drafted in terms of obviousness, or is it ok (as in the case of 3(d)) to draft them in terms of patentable subject matter? These are not merely esoteric questions, especially since another 10 Asian countries are reportedly considering enacting provisions similar to India’s 3(d).

2 Comments on “What do KSR and Novartis' Indian Glivec troubles have in common?”

Great post and very valid points. A few doubts:â€œIn other words, mere innovations are not capable of patent protection.â€Why do you say that â€œinnovationsâ€ are not capable of patent protection? Or, what is youâ€™re definition of an â€œinnovationâ€. 2. â€œExcept in Australia, which has Innovation Patents designed specifically to have an extremely low threshold of ‘inventiveness’ – much easier to meet than obviousnessâ€Are you saying that â€œinventivenessâ€ is a lower standard than â€œnon obviousnessâ€ (TRIPS uses them interchangeably). Also, do you mean that Australia has a utility model kind of system.3. how does it matter whether the statute drafts them as patentable subject matter issues or as an obviousness question (apart from the fact that there will be an issue of â€œtimingâ€–at what point in time will the controller examine the application to see whether it complies with a section 3(d) type section?

Hi ShamnadThanks very much for the great questions. Here are some brief responses.Let me know what you think – and please join in everyone – we can all explore this together.1
– I was (perhaps inelegantly) observing that India’s 3(d) puts a lower
threshold on what would be considered patentable which basically relies
on the law of inventive step. Many people use the term ‘innovation’ to
describe something that is new but not quite up to that standard. To
reinforce the point that this is not an India-only issue, I referred to
the US Supreme Court decision in KSR v Teleflex. Does that help?2
– Inventiveness and Obviousness. I agree that in many contexts they can
be used interchangeably. Note, however, to be pedantic, one should
probably use ‘inventive step’ and ‘obviousness’, not interchangeably,
but as the opposite descriptions of this ground of invalidity. In some
countries, ‘inventiveness’ is used to describe the quality of ‘being an
invention’ – which is basically broadly the same as patentability.Yes
– Australia has a Utility model system – the 8 year right is called an
‘Innovation Patent’. There is no obviousness test for the Australian
Innovation Patent – instead, the test is one of ‘innovative step’. To
pass the test and maintain validity, one must simply show that the
difference between the claimed innovation and the prior art makes a
substantial contribution to the working of the thing (be it a product
or process). There’s some obvious strategic implications of this for
Australian patentees which I will pick up in a future article back at
duncanbucknell.com 3 – Words, the labels we give things and
the way they are used are incredibly important. If we start using them
in other contexts, we can have some unintended results. We usually
don’t find these out until much later.I also believe that
harmonisation of IP law across the globe is a very good thing for the
commercial users of the system – saving time and money if nothing else.
Consequently, while countries are free to make these amendments, they
should ideally be placed in the correct context in the relevant
legislation.I look forward to the continuing discussion.